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4 Implications of AIA and ‘First-to-File’ for Patent Practitioners

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aia-first-to-file-762453-editedDrafting a high-quality patent application has always been important, but the two years since the United States switched to a first-to-file standard have shown that patent application quality can cost—or generate—untold amounts of money for IP-driven companies.

The switch from a first-to-invent patent system to a first-to-file system was a key element of the America Invents Act (AIA). Signed into law in 2011, many of the law’s central provisions, including the change to first-to-file, went into effect in 2013. The time since then has demonstrated that the AIA changed the practice of intellectual property law in the United States in several significant ways. Here are four of them:

You will have to draft faster. Since March 16, 2013, patent practitioners have been under pressure to submit patent applications, especially on cutting-edge technologies, before their competitors do. The first-to-file system in the U.S. does include a one-year “grace period” in which prior public disclosure of an invention, such as a presentation at a trade show, may trump a competitor’s patent filing, but in general, the first inventor to file an application for a patent will generally win the U.S. rights to its protection.

Prior art searches are more important. Some patent practitioners perform only cursory prior art searches, and some perform no searches at all, believing that is the job of the patent examiner. However, identifying and compensating for prior art can help IP practitioners bolster their claims that a given invention is novel and nonobvious, and help avoid early rejections or post-grant challenges from competitors.

Sound drafting is vital. No patent practitioner should submit an application that is vulnerable to Section 112 rejections. Every application should be technically sound, from consistently labeled parts to specific descriptive language. Patent drafting tools can help ensure technically well-drafted applications.

Your patent will be challenged by competitors. The AIA may have increased the pressure to file first, but it also enabled increased scrutiny on granted patents. Competitors now have two new mechanisms, post-grant review and inter partes review, to challenge granted patents. That means that even if a low-quality patent application manages to be granted, it could be invalidated at the end, leaving the IP owner with nothing to show for their often substantial investment of time and money.



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